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19 October 2018

In Thailand, trade mark applicants often encounter
rejections on the ground of non-distinctiveness, where the
application is principally composed of an acronym or a
combination of unpronounceable letters. The Thai Trademark
Office has consistently found that combinations of such letters
in only a slightly stylised manner do not form an invented word
and as such cannot pass the distinctiveness requirement. These
decisions are then, almost without exception, upheld by the
Thai Trademark Appeal Board (TTAB). At that point, many
applicants refrain from appealing to the Thai courts due to the
lengthy litigation process and the significant costs
involved.

Recently, there have been several Thai Supreme Court
decisions indicating that the Thai Trademark Office's position
on letter combinations should be modified.

Section 7 Paragraph 2 of the Thai Trademark Act enumerates
various mark categories that are presumed distinctive by the
registrar, for example, invented words (subparagraph 3) or
stylised letters or numerals (subparagraph 4). Where a
mark falls under one of the listed categories, its
distinctiveness is often easily settled. However, problematic
cases arise where the mark does not meet the specified criteria
of any category for presumed distinctiveness.

Logically, in these cases, the subject marks should be
assessed based on the general criteria of distinctiveness,
which is defined in Section 7 Paragraph 1 as the ability of a
mark to "enable the public or users to distinguish the goods
with which the trade mark is used from other goods." In
practice, however, failure of a mark to fit into one of the
specified distinctiveness categories often results in a
non-distinctiveness rejection.

In Beiersdorf AG v The Department of Intellectual
Property, (case number 5432/2551 (2008)),
the Thai Supreme Court was tasked with assessing the
distinctiveness of the mark
. The trade mark registrar and the TTAB decided the mark lacked
distinctiveness as it did not constitute an invented word or a
mark made up of highly stylised letters. The Supreme Court
found distinctiveness of the mark must be assessed by the
ability of the mark to indicate a source of the goods/services
claimed that is distinguishable from the source of others.

The subject mark comprised the letter combination BFD, with
minimal or no stylisation, followed by a series of four
ordinary opaque circles. The Court had the view that, although
the mark was composed of simple letters and geometrical shapes,
the distinct arrangement of the generic elements rendered the
resulting mark capable of distinguishing the relevant
goods/services. Furthermore, the Court noted that the Roman
letter combination BDF is derived from the applicant's company
name, i.e. Beiersdorf AG. As there was no evidence this letter
combination is commonly used in the trade connected with the
claimed goods/services, the Court deemed it effective in
designating the applicant as the origin of the goods/services
claimed.

The Supreme Court employed an identical reasoning in HTC
Corporation v The Department of Intellectual Property,
(case number 13879/2556 (2013)), where the mark
was deemed distinctive, as the letter combination forming the
mark was derived from the applicant's company name and was not
commonly used in the relevant trade.

The Central Intellectual Property and International Trade
Court, with first instance appeal jurisdiction over trade mark
cases, also demonstrated an affinity with the Supreme Court's
analytical methodology, as reflected in its decision in BFT
S.p.A. v The Department of Intellectual Property, (red
case number TorPor.88/2559 (2016)), which was affirmed by the
Supreme Court earlier this year.

Despite a wealth of jurisprudence on this point, we observe
that the Thai registrar and the TTAB continue to issue and
affirm lack of distinctiveness rejections for trade marks
composed mainly of letter combinations that are not highly
stylised. Thus, we recommend that trade mark owners wishing to
obtain registration for their marks falling in this group be
prepared to appeal their cases to the courts, where the chances
of success will significantly increase.